Patent prosecution
Encyclopedia
Patent prosecution describes the interaction between applicants and their representatives, and a patent office
with regard to a patent
, or an application for a patent
. Broadly, patent prosecution can be split into pre-grant prosecution, which involves negotiation with a patent office for the grant of a patent, and post-grant prosecution, which involves issues such as post-grant amendment and opposition
.
Patent prosecution is distinct from patent litigation, which describes legal action relating to the infringement of patents
.
The rules and laws governing patent prosecution are often laid out in manuals released by the Patent Offices of various governments, such as the Manual of Patent Examining Procedure
(MPEP) in the United States, or the Manual of Patent Office Practice
(MOPOP) in Canada.
and help clarify its novel
features. Practitioners need to ascertain what is already known to people familiar with the general field of the invention—such already-known material is termed the prior art
, and to obtain drawings and written notes regarding the features of the invention and the background.
During this initial phase, sometimes termed "patent preparation", the practitioner may also seek to determine precisely who contributed to the making of the invention. An incorrect listing of inventors may incurably invalidate any patent that might result from an application. This determination is particularly important in the United States
, but may be considered less important in other jurisdictions. The practitioner may also seek to find out whether any publications, offers for sale, or other such public disclosures of the invention were made.
Under the laws or regulations of some jurisdictions, public disclosures or offers to sell an invention prior to filing an application for a patent may prevent the issuance of the patent. In the U.S. these laws are laid out in Title 35 of the United States Code
, §102.
After drafting an application for patent, complying with any further rules (such as having the inventor or inventors review the application prior to filing), and obtaining the applicant's permission, the practitioner files the patent application with the patent office. Usually, the practitioner seeks to file the application as soon as possible, because in a majority of jurisdictions including Europe and Japan, if two or more applications on the same subject matter are filed, only the party who filed first will be entitled to a patent under the "first-to-file
rule". In other jurisdictions such as the United States, which follows a first-to-invent
rule, early filing may prevent the use of certain materials from being applied against the patent application as prior art while the patent application is pending before the patent office. However, three consecutive congressional sessions in the United States from 2005-2009 have attempted to change the United States to the first-to-file rule with the Patent Reform Act of 2005
, the Patent Reform Act of 2007
, and the Patent Reform Act of 2009
.
s," written in a special style that defines exactly what the applicant regards as the particular features of his or her invention. These claims are used to distinguish the invention from the existing prior art, and are compared by the patent office to the prior art before issuing a patent.
Patent applications in most jurisdictions also usually include (and may be required to include) a drawing or set of drawings, to facilitate the understanding of the invention. In some jurisdictions, patent model
s may also be submitted to demonstrate the operation of the invention. In applications involving genetics
, samples of genetic material or DNA sequences may be required.
A search is conducted by the patent office for any prior art that is relevant to the application in question and the results of that search are notified to the applicant in a search report
. Generally the examiner conducting the search indicates in what aspect the documents cited are relevant (novelty, inventive step
, background) and to what claims they are relevant. The materials searched vary depending on the patent office conducting the search, but principally cover all published patent applications and technical publications. The patent office can provide a preliminary, non-binding, opinion on patentability, to indicate to the applicant its views on the patentability and let the applicant decide how to proceed at an early stage.
The search report is typically published with the patent application, 18 months after the earliest priority date, or if it is not available at that time it is published once it is available.
The examination of patent applications may either be conducted at the same time as the search (as in the US, where a search report is not issued), or at a later date after the Applicant has requested examination (as, for example, under the EPC).
Examination is the process by which a patent office
determines whether a patent application meets the requirements for granting a patent
. The process involves considering whether the invention is novel
and inventive
, whether the invention is in an excluded
area and whether the application complies with the various formalities of the relevant patent law.
If the examiner finds that the application does not comply with requirements, an examination report (Office action
in the US) is issued drawing the examiner's objections to the attention of the applicant and requesting that they be addressed. The applicant may respond to the objections by arguing in support of the application, or making amendments to the application to bring it in conformity. Alternatively, if the examiner's objections are valid and cannot be overcome, the application may be abandoned.
The process of objection and response is repeated until the patent is in a form suitable for grant, the Applicant abandons the applications, or a hearing is arranged to resolve the matter.
The rate at which patent applications are allowed can vary significantly from one technology to another. US patent applications in the field of electrical connector
s, for example, get one allowance for every two rejections. Business method patent
applications, however, only get one allowance for every 20 rejections.
In some jurisdictions, substantive examination of patent applications is not routinely carried out. Instead, the validity of invention registrations is dealt with during any infringement action.
The search and examination process is principally conducted between the patent office and the applicant. However, in some jurisdictions, it is possible for interested third parties to file opinions on the patentability of an application. Such opinions may take the form of a formal pre-grant opposition inter partes procedure or it may simply be an opportunity of filing observations as a third party. Reform legislation is set to create an opposition system in the United States.
An applicant is free to abandon an application during the search and examination process. An application may be abandoned if, for example, prior art is revealed which will prevent the grant of a patent and the applicant decides to save cost by terminating the application. An application may be deemed abandoned by the patent office if the applicant fails to meet any of the requirements of the application process, for example replying to an examination report.
), after filing an application, examination is optional, and only on request, rather than automatic. For example, in Japan, an application is published at 18 months after the priority date, but otherwise the application lays fallow until the applicant demands examination, up to 7 years after filing. This gives the applicant time to evaluate which applications are worth spending money on, and which should simply be abandoned. Only a portion of the total number of filed applications are selected for examination by the applicants.
Appeals are very costly to the applicant.
In the United States, appeals are fairly rare. The Board of Patent Appeals and Interferences
adjudicates only about 1 - 2% of all issued patents. For controversial areas such as business method patent
s, however, the appeals rate is much higher. About 10% of the business method patents issued in 2006 were appealed. In some areas, such as insurance patents, the rate is as high as 30%.
issued by the patent office, or if the applicant specifically expresses his or her intention to abandon the application.
The rate at which patent applications are abandoned can vary significantly from one technology to another. In the US, patent applications in the field of electrical connector
s, for example, are abandoned at a low rate of only one abandonment for every 18 office actions (e.g. rejections). Business method patent
applications, however, are abandoned at a much higher rate of one abandonment for every 5 office actions.
Following abandonment, in most jurisdictions, an applicant is usually barred from later seeking patent protection for the same subject matter which was earlier abandoned by the applicant.
In the United States, "reexamination" refers to the process of requesting that the patent office once again subject an issued patent to further examination, accompanied by patents or printed publications showing that there is a substantial new question of patentability ("SNQ"), and/or an explanation of the relevance of the prior art to the claimed invention. Unlike other invalidity considerations, only patents and printed publications will be considered in re-examination. Unlike reissue, reexamination may be requested not only by the patent holder or inventor, but by anyone, although whoever requests reexamination must also submit a fee, which is as high as the full cost of filing a new patent application. A benefit of reexamination is that issued patents may be either invalidated or once again deemed valid, without the considerable cost and lengthy time required for a full infringement lawsuit or declaratory judgment action.
Also, in the United States, if two patent applications are filed which set forth claims directed to the same subject matter, the patent office may declare an "interference" and require that each of the parties appear before the patent office to determine who was the earliest to discover the claimed invention. This "interference practice" is not followed in most other jurisdictions, because it is obviated by the "first-to-file" system used in most countries. During an interference, parties may submit evidence supporting their contention to be the earliest inventor, and the patent office issues a decision following the trial-like interference process.
It is usually recommended that an applicant not represent itself pro se. In the United States, for example, a patent examiner will issue the following form paragraph if it is apparent that an applicant is not familiar with patent office policies and procedures.
¶ 4.10 Employ Services of Attorney or Agent
Patent office
A patent office is a governmental or intergovernmental organization which controls the issue of patents. In other words, "patent offices are government bodies that may grant a patent or reject the patent application based on whether or not the application fulfils the requirements for...
with regard to a patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
, or an application for a patent
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
. Broadly, patent prosecution can be split into pre-grant prosecution, which involves negotiation with a patent office for the grant of a patent, and post-grant prosecution, which involves issues such as post-grant amendment and opposition
Opposition proceeding
An opposition proceeding is an administrative process available under the patent and trademark law of most jurisdictions which allows third parties to dispute the validity of a granted patent or trademark.-Patents:...
.
Patent prosecution is distinct from patent litigation, which describes legal action relating to the infringement of patents
Patent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
.
The rules and laws governing patent prosecution are often laid out in manuals released by the Patent Offices of various governments, such as the Manual of Patent Examining Procedure
Manual of Patent Examining Procedure
The Manual of Patent Examining Procedure is published by the United States Patent and Trademark Office for use by patent attorneys and agents and patent examiners. It describes all of the laws and regulations that must be followed in the examination of U.S. patent applications, and articulates...
(MPEP) in the United States, or the Manual of Patent Office Practice
Manual of Patent Office Practice
The Manual of Patent Office Practice is a manual for patent agents and patent examiners, published by the Canadian Intellectual Property Office...
(MOPOP) in Canada.
Preparation of an application
To obtain patent rights for an inventor, the practitioner typically first drafts an application by interviewing the inventor to understand the nature of the inventionInvention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
and help clarify its novel
Novelty (patent)
Novelty is a patentability requirement. An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application....
features. Practitioners need to ascertain what is already known to people familiar with the general field of the invention—such already-known material is termed the prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
, and to obtain drawings and written notes regarding the features of the invention and the background.
During this initial phase, sometimes termed "patent preparation", the practitioner may also seek to determine precisely who contributed to the making of the invention. An incorrect listing of inventors may incurably invalidate any patent that might result from an application. This determination is particularly important in the United States
United States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
, but may be considered less important in other jurisdictions. The practitioner may also seek to find out whether any publications, offers for sale, or other such public disclosures of the invention were made.
Under the laws or regulations of some jurisdictions, public disclosures or offers to sell an invention prior to filing an application for a patent may prevent the issuance of the patent. In the U.S. these laws are laid out in Title 35 of the United States Code
United States Code
The Code of Laws of the United States of America is a compilation and codification of the general and permanent federal laws of the United States...
, §102.
After drafting an application for patent, complying with any further rules (such as having the inventor or inventors review the application prior to filing), and obtaining the applicant's permission, the practitioner files the patent application with the patent office. Usually, the practitioner seeks to file the application as soon as possible, because in a majority of jurisdictions including Europe and Japan, if two or more applications on the same subject matter are filed, only the party who filed first will be entitled to a patent under the "first-to-file
First to file and first to invent
First to file and first to invent are legal concepts that define who has the right to the grant of a patent for an invention. The first-to-file system is used in all countries except for the United States, which will switch to a first-to-file system on March 16, 2013 after the enactment of the...
rule". In other jurisdictions such as the United States, which follows a first-to-invent
First to file and first to invent
First to file and first to invent are legal concepts that define who has the right to the grant of a patent for an invention. The first-to-file system is used in all countries except for the United States, which will switch to a first-to-file system on March 16, 2013 after the enactment of the...
rule, early filing may prevent the use of certain materials from being applied against the patent application as prior art while the patent application is pending before the patent office. However, three consecutive congressional sessions in the United States from 2005-2009 have attempted to change the United States to the first-to-file rule with the Patent Reform Act of 2005
Patent Reform Act of 2005
The Patent Reform Act of 2005 was United States patent legislation proposed in the 109th United States Congress. Texas Republican Congressman Lamar S. Smith introduced the Act on 8 June 2005. Smith called the Act "the most comprehensive change to U.S...
, the Patent Reform Act of 2007
Patent Reform Act of 2007
The Patent Reform Act of 2007 is a proposal introduced in the 110th United States Congress for changes in United States patent law. Democratic Congressman Howard Berman introduced the House of Representatives bill on April 18, 2007. Democratic Party Senator Patrick Leahy introduced the Senate bill...
, and the Patent Reform Act of 2009
Patent Reform Act of 2009
The Patent Reform Act of 2009 was a set of proposals introduced in the 111th United States Congress for changes in United States patent law. Senators Orrin Hatch and Patrick Leahy introduced a Senate bill on March 3, 2009. Representative John Conyers introduced the House version, H.R. 1260, the...
.
Filing an application
Most patent applications have at least two components, including a general, written description of the invention and at least one "embodiment" thereof, and a set of "claimClaim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
s," written in a special style that defines exactly what the applicant regards as the particular features of his or her invention. These claims are used to distinguish the invention from the existing prior art, and are compared by the patent office to the prior art before issuing a patent.
Patent applications in most jurisdictions also usually include (and may be required to include) a drawing or set of drawings, to facilitate the understanding of the invention. In some jurisdictions, patent model
Patent model
A patent model was a scratch-built miniature model no larger than 12" by 12" by 12" that showed how an invention works...
s may also be submitted to demonstrate the operation of the invention. In applications involving genetics
Genetics
Genetics , a discipline of biology, is the science of genes, heredity, and variation in living organisms....
, samples of genetic material or DNA sequences may be required.
Search and examination
The search and examination phases constitute the main part of the prosecution of a patent application leading to grant or refusal.A search is conducted by the patent office for any prior art that is relevant to the application in question and the results of that search are notified to the applicant in a search report
Search report
In patent law, a search report is a report established by a patent office, which mentions documents which may be taken into consideration in deciding whether the invention to which a patent application relates is patentable...
. Generally the examiner conducting the search indicates in what aspect the documents cited are relevant (novelty, inventive step
Inventive step and non-obviousness
The inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented....
, background) and to what claims they are relevant. The materials searched vary depending on the patent office conducting the search, but principally cover all published patent applications and technical publications. The patent office can provide a preliminary, non-binding, opinion on patentability, to indicate to the applicant its views on the patentability and let the applicant decide how to proceed at an early stage.
The search report is typically published with the patent application, 18 months after the earliest priority date, or if it is not available at that time it is published once it is available.
The examination of patent applications may either be conducted at the same time as the search (as in the US, where a search report is not issued), or at a later date after the Applicant has requested examination (as, for example, under the EPC).
Examination is the process by which a patent office
Patent office
A patent office is a governmental or intergovernmental organization which controls the issue of patents. In other words, "patent offices are government bodies that may grant a patent or reject the patent application based on whether or not the application fulfils the requirements for...
determines whether a patent application meets the requirements for granting a patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
. The process involves considering whether the invention is novel
Novel
A novel is a book of long narrative in literary prose. The genre has historical roots both in the fields of the medieval and early modern romance and in the tradition of the novella. The latter supplied the present generic term in the late 18th century....
and inventive
Inventive step and non-obviousness
The inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented....
, whether the invention is in an excluded
Patentable subject matter
Patentable, statutory or patent-eligible subject matter is subject matter which is susceptible of patent protection. The laws or patent practices of many countries suggest that certain subject matter is or is not something for which a patent should be granted.Together with novelty, inventive step...
area and whether the application complies with the various formalities of the relevant patent law.
If the examiner finds that the application does not comply with requirements, an examination report (Office action
Office action
An office action is a document written by an examiner in a patent or trademark examination procedure and mailed to an applicant for a patent or trademark...
in the US) is issued drawing the examiner's objections to the attention of the applicant and requesting that they be addressed. The applicant may respond to the objections by arguing in support of the application, or making amendments to the application to bring it in conformity. Alternatively, if the examiner's objections are valid and cannot be overcome, the application may be abandoned.
The process of objection and response is repeated until the patent is in a form suitable for grant, the Applicant abandons the applications, or a hearing is arranged to resolve the matter.
The rate at which patent applications are allowed can vary significantly from one technology to another. US patent applications in the field of electrical connector
Electrical connector
An electrical connector is an electro-mechanical device for joining electrical circuits as an interface using a mechanical assembly. The connection may be temporary, as for portable equipment, require a tool for assembly and removal, or serve as a permanent electrical joint between two wires or...
s, for example, get one allowance for every two rejections. Business method patent
Business method patent
Business method patents are a class of patents which disclose and claim new methods of doing business. This includes new types of e-commerce, insurance, banking, tax compliance etc. Business method patents are a relatively new species of patent and there have been several reviews investigating the...
applications, however, only get one allowance for every 20 rejections.
In some jurisdictions, substantive examination of patent applications is not routinely carried out. Instead, the validity of invention registrations is dealt with during any infringement action.
The search and examination process is principally conducted between the patent office and the applicant. However, in some jurisdictions, it is possible for interested third parties to file opinions on the patentability of an application. Such opinions may take the form of a formal pre-grant opposition inter partes procedure or it may simply be an opportunity of filing observations as a third party. Reform legislation is set to create an opposition system in the United States.
An applicant is free to abandon an application during the search and examination process. An application may be abandoned if, for example, prior art is revealed which will prevent the grant of a patent and the applicant decides to save cost by terminating the application. An application may be deemed abandoned by the patent office if the applicant fails to meet any of the requirements of the application process, for example replying to an examination report.
Deferred examination
In some jurisdictions (such as Japan and KoreaKorea
Korea ) is an East Asian geographic region that is currently divided into two separate sovereign states — North Korea and South Korea. Located on the Korean Peninsula, Korea is bordered by the People's Republic of China to the northwest, Russia to the northeast, and is separated from Japan to the...
), after filing an application, examination is optional, and only on request, rather than automatic. For example, in Japan, an application is published at 18 months after the priority date, but otherwise the application lays fallow until the applicant demands examination, up to 7 years after filing. This gives the applicant time to evaluate which applications are worth spending money on, and which should simply be abandoned. Only a portion of the total number of filed applications are selected for examination by the applicants.
Invention registration
Some jurisdictions including Bermuda, South Africa, and Germany (in the case of Gebrauchsmusters (utility model)) go one step further, in that an application is passed to issue and publication as an enforceable patent in short order, with no substantive examination. Questions of novelty and non-obviousness/inventive step are not reviewed until litigation may arise concerning the issues. Obviously, such a patent does not carry the same presumption of validity as a patent that has been fully examined. Such systems are known as "invention registration" regimes, and have the benefit of reduced costs, because applicants may postpone or completely forego the expensive process of examination for inventions that are of small or speculative value in the applicant's field of endeavor. Another advantage is that a patent is granted relatively fast. A patent in South Africa, for example, is granted approximately 8 months after the date of filing, whereas in examining countries, it is highly unusual for a patent to be granted in less than 3 years. At the same time, simply filing an application usually preserves the applicant's right to subsequently seek full examination and protection for his invention, if a competitor or a pirate is later discovered to infringe the invention.Appeals
However, if the examiner and the applicant cannot reach agreement regarding the patentability of the application, the applicant may file an appeal to either the patent office or a court of law, asserting that his patent application was wrongly rejected. For such an appeal to be successful, the applicant must prove that the patent office was incorrect in applying the law, interpreting the claims on the patent application, or interpreting and applying of the prior art vis a vis the patent application. If the appeal is successful, the patent office or court may order that a patent be issued based on the application, or that the patent office correct its examination of the application if the patent office is found to have been incorrect. Otherwise, if the applicant is not found convincing, the rejection of the patent application may be upheld.Appeals are very costly to the applicant.
In the United States, appeals are fairly rare. The Board of Patent Appeals and Interferences
Board of Patent Appeals and Interferences
The Board of Patent Appeals and Interferences is an administrative law body of the United States Patent and Trademark Office , which decides issues of patentability. The Chief Administrative Patent Judge is James Donald Smith.-Structure:...
adjudicates only about 1 - 2% of all issued patents. For controversial areas such as business method patent
Business method patent
Business method patents are a class of patents which disclose and claim new methods of doing business. This includes new types of e-commerce, insurance, banking, tax compliance etc. Business method patents are a relatively new species of patent and there have been several reviews investigating the...
s, however, the appeals rate is much higher. About 10% of the business method patents issued in 2006 were appealed. In some areas, such as insurance patents, the rate is as high as 30%.
Abandonment
Generally, an applicant is free to abandon his or her patent application at any time, and in many jurisdictions may "disclaim" his or her patent even after the patent is issued. Such abandonment may occur during the prosecution process, such as when the applicant is unable to convince the patent office to withdraw a rejection of his or her patent application. Further, abandonment is often held to have occurred if the applicant fails to respond within a certain time period to an office actionOffice action
An office action is a document written by an examiner in a patent or trademark examination procedure and mailed to an applicant for a patent or trademark...
issued by the patent office, or if the applicant specifically expresses his or her intention to abandon the application.
The rate at which patent applications are abandoned can vary significantly from one technology to another. In the US, patent applications in the field of electrical connector
Electrical connector
An electrical connector is an electro-mechanical device for joining electrical circuits as an interface using a mechanical assembly. The connection may be temporary, as for portable equipment, require a tool for assembly and removal, or serve as a permanent electrical joint between two wires or...
s, for example, are abandoned at a low rate of only one abandonment for every 18 office actions (e.g. rejections). Business method patent
Business method patent
Business method patents are a class of patents which disclose and claim new methods of doing business. This includes new types of e-commerce, insurance, banking, tax compliance etc. Business method patents are a relatively new species of patent and there have been several reviews investigating the...
applications, however, are abandoned at a much higher rate of one abandonment for every 5 office actions.
Following abandonment, in most jurisdictions, an applicant is usually barred from later seeking patent protection for the same subject matter which was earlier abandoned by the applicant.
Opposition
Opposition is a process provided by some patent law systems in which a third party can oppose the grant of a patent in an attempt to prevent (or revoke) the grant of a patent. In the European Patent Office, for example, any person may file opposition to the grant of a European patent within nine months from grant.Reissue, reexamination and interference
In some jurisdictions, once a patent is issued, the patent holder may request a "reissue" of the patent to correct mistakes in the issued patent. Such "reissue applications" must typically be filed within a particular period of time following issuance of the original patent. In some jurisdictions, such as the United States, the patent holder may even seek to broaden the scope of the invention defined in the claims by filing a reissue application, although a broadening reissue in the USA must be filed within 2 years from grant. Also, in the United States, only the patent holder may file for reissue. The case of Ex Parte Tanaka established the principle that a patentee cannot simply add narrow dependent claims to an issued patent through the reissue process. In order to avail herself of the process, the patentee must identify errors in the original claims, thereby surrendering some of the broad claims she already has in return.In the United States, "reexamination" refers to the process of requesting that the patent office once again subject an issued patent to further examination, accompanied by patents or printed publications showing that there is a substantial new question of patentability ("SNQ"), and/or an explanation of the relevance of the prior art to the claimed invention. Unlike other invalidity considerations, only patents and printed publications will be considered in re-examination. Unlike reissue, reexamination may be requested not only by the patent holder or inventor, but by anyone, although whoever requests reexamination must also submit a fee, which is as high as the full cost of filing a new patent application. A benefit of reexamination is that issued patents may be either invalidated or once again deemed valid, without the considerable cost and lengthy time required for a full infringement lawsuit or declaratory judgment action.
Also, in the United States, if two patent applications are filed which set forth claims directed to the same subject matter, the patent office may declare an "interference" and require that each of the parties appear before the patent office to determine who was the earliest to discover the claimed invention. This "interference practice" is not followed in most other jurisdictions, because it is obviated by the "first-to-file" system used in most countries. During an interference, parties may submit evidence supporting their contention to be the earliest inventor, and the patent office issues a decision following the trial-like interference process.
Patent agents and attorneys
In some jurisdictions only authorized practitioners can act before the patent office, although applicants (e.g. inventors) can generally represent themselves. This is known as pro se.It is usually recommended that an applicant not represent itself pro se. In the United States, for example, a patent examiner will issue the following form paragraph if it is apparent that an applicant is not familiar with patent office policies and procedures.
¶ 4.10 Employ Services of Attorney or Agent
- An examination of this application reveals that applicant is unfamiliar with patent prosecution procedure. While an inventor may prosecute the application, lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed. Applicant is advised to secure the services of a registered patent attorney or agent to prosecute the application, since the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting an attorney or agent.
- A listing of registered patent attorneys and agents is available on the USPTO Internet web site http://www.uspto.gov in the Site Index under "Attorney and Agent Roster". Applicants may also obtain a list of registered patent attorneys and agents located in their area by writing to the Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
See also
- List of patent officesPatent officeA patent office is a governmental or intergovernmental organization which controls the issue of patents. In other words, "patent offices are government bodies that may grant a patent or reject the patent application based on whether or not the application fulfils the requirements for...
- Patent applicationPatent applicationA patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
- Public participation in patent examinationPublic participation in patent examinationThe involvement of the public in patent examination has been proposed and is currently used in some forms to help identifying relevant prior art and, more generally, to help assessing whether patent applications and inventions meet the requirements of patent law, such as novelty, inventive step or...
- Patent Prosecution HighwayPatent Prosecution HighwayThe Patent Prosecution Highway is a set of initiatives for providing accelerated patent prosecution procedures by sharing information between some patent offices...
(prosecution cooperation between some patent offices) - Backlog of unexamined patent applicationsBacklog of unexamined patent applicationsAlthough not clearly defined, the backlog of unexamined patent applications consists, at one point in time, in all the patent applications that have been filed and still remain to be examined. The backlog was said to be 4.2 million worldwide in 2007, and, as of 2009, it reportedly continues to grow...